So, you’ve decided to register a new trademark, or renew an already registered mark, and now you are stuck trying to pick a specimen to prove to the United States Patent and Trademark Office (USPTO) that you are using your trademark in commerce. How do you go about creating a usable specimen that the USPTO will accept?
What, exactly, is a specimen?
First, you’re probably wondering what a trademark specimen is. The USPTO defines specimens as “evidence of how a mark is used in commerce.” Essentially, your specimen is a photo that not only proves you are using your trademark for what you claim to be using it for but also shows that consumers of your goods or services encounter your mark in connection with the sale of your goods or services.
You will need to provide the USPTO with a usable specimen when you first apply for your trademark and then again, each time you renew your trademark, so it is important to understand exactly what you will need to provide to prevent rejection of your application or renewal.
Next, you’re probably thinking, “How can I avoid rejection? That sounds bad!” Well, you’re going to need to know exactly what qualifies as a usable specimen and then follow those guidelines carefully. The exact requirements for an acceptable specimen according to the USPTO website, state that a specimen must:
- Be a real example of how you use your trademark in commerce in providing your goods or services (not a mockup, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).
- Show your trademark used with the goods or services listed in your application.
- Depict the same trademark as shown on your drawing.
- Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
- Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
- Show your trademark used in a way that directly associates the mark with the goods or services.
- Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark).
- Include the URL and date you accessed or printed the webpage in your submission.
- Be attached to TEAS forms as JPG files of up to 5 megabytes or .PDF, .WAV, .WMV, .WMA, .MP3, .MPG, or .AVI files of up to 30 megabytes.
Now, in English…
Finding Usable Specimens (with Examples)
Some usable examples of specimens for the sale of goods include a picture of the trademark on a product or its packaging. This could include tags, labels, or point-of-sale (POS) displays. However, a picture of the label or tag on its own, without proof that it is actively available for purchase, will not be enough. Similarly, your specimen cannot be a digitally created mockup or AI representation – it must be an actual use case. If you can show your mark being used with a product on a store shelf, or listed on a website with a “buy now” button, your specimen will be much stronger.
If your trademark is for a service, a usable specimen could show your trademark on advertisements, marketing materials, websites, or brochures. However, there must be language showing that the mark is actively being used in commerce such as “call now to order” or “buy now” with current contact information or directions on how to purchase. A screenshot of your website with a list of your services available for purchase, your trademark prominently featured, and a call to action (such as “order here” or “buy now”) would be a strong specimen. Remember though, a screenshot must include the date and time of access, and you will need to provide the URL to the website.
Once you have obtained some specimens, you can double-check them against these best-practice tips:
- Ensure your Trademark is Clearly Visible: The mark must be legible and prominently featured in the specimen.
- Provide High-Quality Images: Submit clear, unedited photos or screenshots in the correct file format. Blurry or low-resolution images may lead to rejection.
- Avoid “Ornamental” Use: If a trademark appears on clothing or accessories, it should be on the tag, label, or packaging, rather than just a decorative design.
- For Online Specimens, Show the Purchasing Connection: If submitting a webpage as a specimen for goods, ensure that it includes an add to cart button or other purchasing information.
Avoiding Rejection from the USPTO
Hopefully, understanding the exact requirements for a specimen and following these helpful tips will help you to provide a specimen that passes the USPTO’s high standards. However, rejection happens. If the USPTO rejects your specimen, they will issue an office action which will require an official response to be filed (a.k.a more of your time and money). Some common reasons for rejection by the USPTO include:
- The specimen is not in actual commercial use.
- The trademark is used only as a decorative feature rather than as a brand identifier.
- The specimen does not show a direct association between the mark and the goods or services.
Whether you’re submitting your first trademark application, filing a Statement of Use, or renewing a registered mark, it is best practice to ensure your specimen properly meets all the requirements.
Do you need assistance in selecting a usable specimen or filing a trademark? Would you like to consult with an Intellectual Property Attorney to determine which options are the best for you? Contact Law 4 Small Business today for any of your Intellectual Property concerns.
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